DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 11-17, in the reply filed on 10/23/2025 is acknowledged.
Claims 1-10 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/23/2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
It is noted that in the provisional application 63/374,813 to which the present application claims domestic benefit, no basis or support could be found for the claim 14 limitations “wherein the residue is further divided into a third portion” and “blending the third portion of the residue with a second portion of the heavy distillate and the asphaltene-rich residue to produce a second asphalt binder” (see claim 14 at lines 1 and 5-6); therefore, the effective filing date for claim 14 will be the actual filing date of 09/06/2023.
Claim Objections
Claim 12 is objected to because of the following informality:
In claim 12, there should be a space between numbers and units; “350°C” should read “350 °C” and “550°C” should read “550 °C” (see claim 12 at line 2).
Appropriate correction is required.
Claim Interpretation
For purposes of claim interpretation, “heavy distillate” as recited in claims 11-14 (see claim 11 at lines 4 and 8, claim 12 at lines 1 and 3, claim 13 at lines 3-4 and claim 14 at lines 3 and 5) is interpreted as meaning distillate in the atmospheric boiling point range of between about 350 °C and about 550 °C, as this would appear most in keeping with Applicant’s intent as discussed in the Specification at paragraph [0105].
For purposes of claim interpretation, “asphaltene-rich residue” as recited in claims 11, 13-14 and 17 (see claim 11 at lines 7 and 9, claim 13 at line 4, claim 14 at line 6 and claim 17 at lines 1-2) is interpreted as meaning the heavier phase, which contains asphaltenes, i.e., the deasphalting residue, as this would appear most in keeping with Applicant’s intent as discussed in the Specification at paragraphs [0058] and [0095].
For purposes of claim interpretation, “extra heavy oil” as recited in claim 15 (see claim 15 at lines 2) is interpreted as meaning crude oil, including bitumen, having a room temperature viscosity greater than 10,000 centipoise and an API gravity of 10 deg API or lower, as this would appear most in keeping with Applicant’s intent as discussed in the Specification at paragraph [0048].
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 16 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites the limitation “wherein the crude petroleum feedstock comprises recycled asphalt” (see claim 16 at lines 1-2); however, recycled asphalt is not a crude petroleum feedstock, it is petroleum product that has undergone significant processing and been recycled. The meaning of this limitation is therefore indefinite, because it is not clear whether the feedstock actually has to be crude petroleum, or whether it does not have to be crude petroleum and can actually comprise non-crude products such as recycled asphalt.
For purposes of examination, Examiner treated claim 16 as meaning that the feedstock is a petroleum feedstock rather than a crude petroleum feedstock, i.e., a crude oil or a substance produced or derived from crude oil, which would include recycled asphalt. Clarification is requested.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16 depends from claim 11, which recites the limitation “providing a crude petroleum feedstock” (see claim 11 at line 2). Claim 16 recites the further limitation “wherein the crude petroleum feedstock comprises recycled asphalt” (see claim 16 at lines 1-2). Claim 11 requires that the feedstock be crude petroleum, but in claim 16 the feedstock can comprise recycled asphalt, which is not crude petroleum. Therefore claim 16 is of improper dependent form for failing to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 11, 15 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aldous, et al. (U.S. Pub. No. 2019/0016965-A1) (hereinafter, “ALDOUS”).
Regarding claim 11, ALDOUS teaches a method for producing an asphalt binder (see ALDOUS generally at Abstract and paragraph [0009]), comprising:
providing a crude petroleum feedstock (see ALDOUS at paragraphs [0003] and [0044]);
subjecting the crude petroleum feedstock to vacuum distillation or flash separation to produce a heavy distillate and a residue (see ALDOUS at Abstract and paragraphs [0008], [0026] and [0042], teaching vacuum distillation which produces a heavy vacuum gas oil (i.e., distillate) and vacuum resid (i.e., residue));
dividing the residue into a first portion and a second portion (see ALDOUS at paragraphs [0008] and [0083], teaching subjecting at least a portion of the vacuum resid to solvent deasphalting and including at least a portion of the vacuum resid in the product, i.e., the residue is divided into at least a first and second portion);
performing solvent deasphalting on the first portion of the residue to produce a partially deasphalted oil and an asphaltene-rich residue (see ALDOUS at paragraph [0008]); and
blending the second portion of the residue with the heavy distillate and one of the partially deasphalted oil and the asphaltene-rich residue (see ALDOUS at paragraphs [0008], [0018], [0048], [0080] and [0083], teaching making asphalt binders comprising a mixture of vacuum resid, heavy vacuum gas oil, the deasphalter residue/resin, and optionally deasphalted oil).
Regarding claim 15, ALDOUS teaches a method according to claim 11, wherein the crude petroleum feedstock comprises bitumen or extra heavy oil (see ALDOUS at [0003], [0042] and [0044], teaching crude oil feedstock (such as heavy oil feed), which comprises bitumen).
Regarding claim 17, ALDOUS teaches a method according to claim 11, further comprising collecting a fraction of the asphaltene-rich residue (see ALDOUS at e.g. paragraph [0008], teaching collecting deasphalter residue). The limitation of “for use in carbon fiber production” is merely a recitation of an intended use of the residue which is collected, and is not directed toward the claimed method. The way in which someone intends to use the residue after it is collected is not relevant to the claimed method for producing an asphalt binder and does not hold patentable weight in the claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over ALDOUS.
Regarding claim 12, ALDOUS teaches a method according to claim 11, wherein the heavy distillate has an atmospheric equivalent boiling temperature overlapping with and thereby rendering obvious the claimed range of between about 350 °C and about 550 °C and the residue has an atmospheric equivalent boiling temperature greater than the heavy distillate (the distillation residue by definition has to have a boiling point that is greater than the distillate, as that is the reason that it is residue; see ALDOUS at paragraphs [0026]-[0028] and [0032], teaching gas oil (i.e., distillate) distillation points, e.g., a T5 to T95 distillation point of 370 to 482 °C or 399 to 538 °C, and also teaching 510 °C+, 538 °C+ or 566 °C+ vacuum resid fractions (i.e., vacuum residue having an atmospheric boiling temperature of 510 °C or greater, 538 °C or greater, or 566 °C or greater), i.e., the distillate boiling temperature would have to be lower than any given vacuum resid boiling temperature, e.g., less than 538 °C, etc.). As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 14, ALDOUS teaches a method according to claim 11, wherein the residue is divided into multiple portions (see ALDOUS at e.g. paragraphs [0008] and [0083], teaching dividing the vacuum resid into a plurality of portions), and wherein the blending step comprises:
blending a portion of the residue with a portion of the heavy distillate and the partially deasphalted oil to produce a first asphalt binder (see ALDOUS at paragraphs [0008], [0018], [0048], [0080] and [0083], teaching asphalt binder products comprising at least a portion of the vacuum resid (i.e., the residue), at least a portion of the vacuum gas oil (i.e., the heavy distillate) and the deasphalted oil);
and blending a portion of the residue with a portion of the heavy distillate and the asphaltene-rich residue to produce a second asphalt binder (see ALDOUS at paragraphs [0008], [0018], [0080] and [0083], teaching asphalt binder products comprising at least a portion of the vacuum resid (i.e., the residue), at least a portion of the vacuum gas oil (i.e., the heavy distillate) and deasphalter residue/resin (i.e., the asphaltene-rich residue)).
ALDOUS does not explicitly mention into how many portions the residue and the heavy distillate are divided; however, ALDOUS explicitly teaches that a binder may be formed by mixing a portion of the residue, a portion of the heavy distillate, and the partially deasphalted oil (see ALDOUS at paragraphs [0008], [0018], [0048], [0080] and [0083]), and explicitly teaches that a different binder composition may be formed by mixing a portion of the residue, a portion of the heavy distillate, and the asphaltene-rich residue (see ALDOUS at paragraphs [0008], [0018], [0080] and [0083]). It is therefore obvious to one of ordinary skill in the art that the residue may be divided into three portions and the heavy distillate may be divided into two portions in order to make the two binders, as ALDOUS explicitly teaches making both of these asphalt binders.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over ALDOUS in view of Sirota (U.S. Pub. No. 2015/0191598-A1) (hereinafter, “SIROTA”).
Regarding claim 13, ALDOUS teaches a method according to claim 11, further comprising selecting a composition of the asphalt binder to achieve a desired grade using an empirical model that predicts a temperature grade (see ALDOUS at paragraphs [0041]-[0042] and [0044]-[0052] and Tables 1-3) based on:
measuring viscosity of a blend comprising the heavy distillate and at least one of the partially deasphalted oil and the asphaltene-rich residue (see ALDOUS at Table 3);
correlating the viscosity with a temperature grade for a given blend (see ALDOUS at Table 3, correlating viscosity with desired penetration grade at 25 °C);
and correlating the temperature grade with another temperature grade (see ALDOUS at Table 3, correlating the penetration grade with softening temperature).
As set forth above, ALDOUS teaches selecting an asphalt binder composition to achieve a desired penetration grade by using an empirical model to predict asphalt binder properties and correlating viscosity of the of a given blend with the penetration grade and softening temperature (which are metrics related to performance grade high and low temperature grades). However, ALDOUS does not explicitly teach predicting high temperature grade and low temperature grade, measuring viscosities of the individual components of the residue, heavy distillate and partially deasphalted oil and/or asphaltene-rich residue, and correlating the viscosities with high and low temperature grade.
However, the claimed method for selecting an asphalt binder composition is known in the art. For example, SIROTA teaches a method for producing an asphalt binder comprising selecting the composition of the asphalt binder to achieve a desired grade using a predictive model by measuring the viscosities of two or more of the plurality of asphalt components, correlating the measured viscosities with a characteristic temperature value, selecting a target characteristic temperature value range and viscosity value range, corresponding to a high temperature performance grade and a low temperature performance grade, for the asphalt blend, and forming the asphalt blend from the plurality of asphalt components based on the target characteristic temperature value range and viscosity value range corresponding to the desired high temperature grade and low temperature grade (see SIROTA at paragraphs [0008] and [0048]). SIROTA teaches that using this versatile predictive model to form asphalt blends having the desired performance grade can provide many advantages, such as allowing for the formation of asphalt blends having desired features using components that would traditionally be viewed as less desirable, providing real-time feedback for an asphalt formation process, enhancing throughput, and decreasing costs (see SIROTA at paragraphs [0005]-[0006], [0037]-[0038] and [0048]-[0049]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of ALDOUS by using the predictive model taught by SIROTA (which includes measuring viscosities of two or more of the individual components, e.g., the residue, heavy distillate, partially deasphalted oil and/or asphaltene-rich residue used in the asphalt blends of ALDUOUS, and correlating the measured viscosities to a high temperature grade which is correlated to a low temperature grade) to form asphalt compositions having the desired temperature grade. One of ordinary skill in the art would have been motivated to make this modification for the benefit of achieving the desired performance grade for the asphalt binder while allowing for the use of components that would traditionally be viewed as less desirable, receiving real-time feedback for the asphalt formation process, enhancing throughput and decreasing costs (see SIROTA at paragraphs [0005]-[0006], [0037]-[0038] and [0048]-[0049]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over ALDOUS in view of Blauwhoff, et al. (CA-1198387-A) (hereinafter, “BLAUWHOFF”).
Regarding claim 16, ALDOUS teaches a method according to claim 11.
ALDOUS fails to explicitly teach that the petroleum feedstock comprises recycled asphalt.
However, it is known in the art that recycled asphalt can be used as feedstock for vacuum distillation. For example, BLAUWHOFF teaches a process for producing deasphalted oils, hydrocarbon oil distillates and asphaltic bitumen (i.e., asphalt binder) including vacuum distillation of crude oil and solvent deasphalting wherein the feedstock for vacuum distillation includes recycled asphalt (see BLAUWHOFF at pg. 3, lines 3-7, pg. 4, lines 2-11, pg. 8, line 27 - pg. 10, line 4, pg. 12, line 16 - pg. 13, line 5, pg. 13, line 28 - pg. 14, line 23, and Figs. IV and VII). The process of BLAUWHOFF includes recycling asphaltic bitumen and adding it to the feedstock of the process; e.g., BLAUWHOFF teaches a process (Fig. IV) wherein the asphaltic bitumen (6) recovered from solvent deasphalting is divided into two portions (30) and (31), portion (30) is subjected to thermal cracking followed by atmospheric distillation, the residue (26) is separated by vacuum distillation, then the vacuum residue (8) which contains asphalt/bitumen is recycled and added to the feedstock (1), then the feedstock mixture (29) comprising the recycled asphalt is subjected to catalytic hydrotreatment (11) prior to being fed to atmospheric distillation (15), the residue (23) of which is the feedstock for vacuum distillation (16), then finally the vacuum residue (3) undergoes solvent deasphalting (12) to produce the asphaltic bitumen (6) (see BLAUWHOFF at pg. 2, lines 25-34, pg. 12, line 16 - pg. 13, line 5, and Fig. IV; BLAUWHOFF also teaches other processes including recycling asphalt, e.g., pg. 13, line 28 - pg. 14, line 23 and Fig. VI, etc.). BLAUWHOFF further teaches that recycling the asphalt/residue and using it as feedstock for the process produces higher yields of hydrocarbon oil distillates and deasphalted oils (see BLAUWHOFF at pg. 20, lines 9-17).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of ALDOUS by including recycled asphalt in the feedstock as taught by BLAUWHOFF (see BLAUWHOFF at pg. 8, line 27 - pg. 10, line 4, pg. 12, line 16 - pg. 13, line 5, pg. 13, line 28 - pg. 14, line 23, and Figs. IV and VII; see ALDOUS at paragraphs [0046] and [0048], teaching subjecting deasphalting residue to hydrotreatment prior to catalytic cracking, then using the product as feedstock for distillation). One of ordinary skill in the art would have been motivated to make this modification for the benefit of producing higher yields of hydrocarbon oil distillates and deasphalted oils as taught by BLAUWHOFF (see BLAUWHOFF at pg. 20, lines 9-17). Further, one of ordinary skill in the art could have simply substituted the feedstock of ALDOUS with a feedstock containing recycled asphalt with a reasonable expectation of success, yielding the predictable result of providing a hydrocarbon feedstock which is suitable for vacuum distillation and subsequent solvent deasphalting and will form vacuum distillate, vacuum residue, deasphalted oil and deasphalting residue. Further, BLAUWHOFF teaches that hydrocarbon feedstock comprising recycled asphalt is a known feedstock in the art of asphalt production, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731